2.12.2.Non-designation for reasons of national law
2.12.004For reasons of national law, check boxes in Box No. V of the PCT request form provide for exceptions to the otherwise automatic designation of Germany (DE), Japan (JP) and the Republic of Korea (KR). Selecting the check box for these designations is not considered as withdrawal of a designation, but as non-designation of the state(s) concerned.
R. 4.9(b) PCT
WIPO PCT Guide 5.053
2.12.005According to the national law of these states, the filing of an international application which contains the designation of that state and claims the priority of an earlier national application filed in that state will have the result that the earlier national application ceases to have effect, with the same consequences as the withdrawal of the earlier national application. To avoid this effect, the appropriate box must be selected (Box No. V of the PCT request form). More information on "self-designation" can be obtained from the national patent offices concerned.
2.12.006As regards the EPC contracting states, the problem of self-designation exclusively concerns Germany (DE), and only if protection via the grant of a national patent in Germany is sought, i.e. if the application actually enters the German national phase. The designation of Germany for the purposes of a European patent is not considered a self-designation and is thus not affected. Consequently, there is no reason for withdrawing the automatic designation of EP. If a non-designation of Germany is not indicated upon filing, the international application can still enter the German national phase; however, if this is effected, the earlier German national application will be deemed withdrawn.
2.12.007The national law of a number of EPC contracting states stipulates that only a European patent may be obtained for these states on the basis of an international application. The countries which close off the route to a national patent in this way were, on 1 January 2023, Belgium (BE), Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Latvia (LV), Lithuania (LT), Monaco (MC), Montenegro (ME), Malta (MT), Netherlands (NL), San Marino (SM) and Slovenia (SI).
2.12.008The situation is similar for applicants wishing to obtain patent protection in Montenegro on the basis of an international application filed prior to its accession to the EPC. Since no national phase is in place for such applications either, applicants have to enter the regional phase before the EPO and then extend the granted European patent to Montenegro. With regard to Montenegro as an "extension state" and the applicability of the extension system to applications filed prior to the termination of an extension agreement, see point 2.13.001 ff.
PCT Newsletter 1/2019, 1